31 F. 736 -

31 F1d 736

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Case Text

736

FEDERAL REPORTER.

portant all confirmatory of the conclusion that beyond this the inven,tion was only inchoate. This letter was written to Meucci when the latter was in communication with Mr. Stetson in reference to obtaining a patent for the invention. In this letter Mr. Stetson, in substance, advised Meued that his invention was not in a condition to patent; telling him that it was "an idea giving promise of usefulness," and the proper subject of a caveat, but requiring many experiments to prove the reality of the invention. Without adverting to other evidence tending to indicate that Meucci was merely an experimentalist who had not produced anything new in the art of transmitting speech by electricity, it suffices to say that his pretensions are overthrown by his own description of the invention at a time when he deemed it in a condition to patent, and by the evidence of Mr. Stetson. The evidence leaves the impression, that his speaking telegraph would never have been offered to the public as an invent.ion .jihe had not been led by his necessities to trade on the credulity of. his friends; that he intended tojnduce the three persons of small means and little business experience, who became his associates under the agreement of December 12, 1871, to invest in ,an invention which he would not offer, to men like Ryder: and Craig; and that this was done in the hope of obtaining. such loans and assistance from them as he would temporarily require. A decree is ordered for the complainant.

The Schillinger patent for an improvement in concrete pavements is confined to a pavement laid in detached blocks, formed on the ground, with a water-tight joint between them produced by the interposition of a strip of tar-paper, or other suitable material, between said blocks; and a concrete pavement laid between scantling in sections six feet by twelve, more or less, with a vacant space between each, of thr,ee feet by twelve, in which the pave-, ment is laid as soon as the adjoining sections are sufficiently set to work over, while each section, as soon as laid, is marked off, or cut with a marker or trowel, into blocks three feet square, or other convenient size, is not an infringement of such patent.

(Syllabu8 by the Oourt.)

In Equity. Bill for injunction to restrain infringement of complainant's letters patent. William B. Gilbert, for plaintiff. Cyrus Dolph, for defendants. DEADY, J. This suit is brought by the plaintiff, a citizen of New York, against the defendants William A. Middleton, a citizen of Oregon, Mary Hueston, a citizen of New Jersey, and the Oregon Artificial Stone

SCHILLING;ER

v.

MIDDLETON.

737

Company; ia carporatiordormed under the laws of Oregon, to have them enjoined from patent for an "improvement in pavement." The original letters were issued to the plaintiff on July 19, 1870, and numbered 105,599. On May 2, 1871, there wa$a reiss'le, numbered 4,364. From the specification annexed thereto, it appears that John J. Schillinger "invented a Ilew and useful improvement in concrete pavementsj" which relates to a concrete psvemept laid. in sections, "so that each section can be and relaid without disturbing the adjoining sections. With the joints of this sectional concrete pavement are combined strips of tar-paper, or equivalent material, arranged between the several blocks or sections in such a manner as to produce a suitable tight yet allow the ,blocks to be raised separately, without a.ffectingthe blocks adjacent thereto." After describing the concretea,s a. mixture of cement, sand, and gravel, or other suitable material, witp sufficient water to make the mixture plastic, the specification proceeds: "While the mass is plastic, llay or spread the same on the foundation or bed of the pavement, either in moulds or between movable JOIStS of the thickness, so as to form the..edges of the concrete blocks; pne block Qeil1g. formed ilfter. the other. When the first block has set, Irel?ove the joists or partitions between it and the block next to be formed, and then I form the second block, and so on, each succeeding block beingfol'med' after theadja-' cent blocks have set, '(and, since the concrete in setting shrinks, the second block, when set, does not adhere to the first, and so on;) and when the pavement is each block can be taken up, indep!Jndent Of the adjoining blocks. BetWeen thejoints of the adjacent blocks are pla<:ed strips of per, or other suitable ,material, in the following mann,er: After completing one block, I place the tar":Pllper along the edge where the next block is to be formed, and I put the plastic composition for 8uch next blockul;Jagairistthe tar-paper joint, and proceed with the formation of a new block until it is completed, In this manner I proceed until the pavement is completed, interposing thll,several joints, as describeq. The paper constitutes tight water-proof joint, but it a\lows the several blocks to heave separately frorothe eiIects offrost, or to beraised or removed wheneve'roc-' cll.!'ion may arise, without injury to theadjacl;\nt blo'cks. The paper when plaCed against the block first formed, does not adhere thereto, and therefore the joints ateailways free between the several blocks, although the paper may adhere to the edges of the block or blocks formed after the same has been set up,in ,its place:hetween the joints. [In such cases, however, where cheapness is an object, the tar-paPlilf IQay be omitted, and the blocks formed without interposinganJ1;biIlg betweenthe joints as previously described. In this latter case, the joints soon fill IIp with sandor dust, and the pavement is rendered sufficiently tight for many purposes, while the blocks are detached from each other, andean be taken up and relaid, each independent of the adjoining blocks.] "What I claim as new, li'nd, desire to secure by letters patent, is (1) a concrete pavement, laid in detached blocks or sections, snLstantially in the manner shown and described; (2) the arrangement of tar-paper. or its equivalent,'between adjoining blocks of concrete. substantially as and for the purpose set forth. " On February 27,1875, the. plaintiff formally disclaimed the portions of the specification enclosed in brackets; and also .disclaimed formv.31F.'1o.12-47

738'

FEDERAL RtP6RTER.

inge>'/ brocks!from plastic materia1:,':without interposing anything beofformation. " . tweeldi'ieit' Joints while in the It is.,alleged,inthe bill that on August - , 1886, the defendants com- . mencedto construct cOITcretepavement' on the premises oithe defendant Hpeston; on the north and east sides of lot 1 in block 14 in Portthe improvement and invention described in said letland, ters paterit;ll and not contained in saidtdisclaimerj '''which concrete pavements said' defendants· pave proceeded to make'and" (lODstruct in' all respects' in the' samEnnanner as the 'concrete pavement . so by is an irifrin'gement on the plaintiff's rights, as cured Whim by said patent; The answer of, the defendants admits the letters paWnt;\?ut denies On September '6th the parties, filed s':stfpulation to the:effect that on the defefidants giving bond for the ,'diJ,trlages, if iUly, they' ll1ight proceed with 'the construction of the paveirienHnquestion, which witS done. . FroIri'theevidence it appears that the' pavementwas'constructed as' follows j !A concrete for the fdundatjon, or backing w8smade of five parts of'gravel' one and one-eighth indheubes to one of cement, mixed with water t6Jiiakeltp]astic. This' WAS 'dumped into a box or mould made scantlihg It space six feet peing the width of the pavement. or. wide, by! twelve feet long; the sidewalk.' -! This substance was lhen .spread out a.nd/tamped down until" it was abbl1tthree and one-fourth inches thick. Then a facing a half of eightpll.rts of gravel one-eighth of an inch inch thick, cement, was put,over this, and down smooth. cubes to The, wll.te!." t1;\,tcame to the SUrface Jri this process absorbed by little plt're Aeat' ccement over the ,w'hole, ;S,urface, which also rendereet:the pavemeat more-impervious to water. ,The section was, then markM.!o'ffinto eight blocks afabout three feet square. This was done withaimarkingand dressing tool, made for the purpose, consistiIlg of conyei, ab.out three inches long and two' incbes ,with a blunt knife or cutter of steel set in the middle of the.plate,WhjQh, :made ,alljnqis:ion'in the along the line of; division of about, half an inch deep:, and of a V shape. The surface'oHbeplate, in"passing over the material, pressed it down, on .eithersiqEiiO'f,'the cut,ter, and fOUl1ded off the upper edges of the in-. cision, ;block to and the of the thIS manner, nnother waS fOft;ljled three feet <listp.nttherefrOlp, andsq on j and; these sections were set sufficiently. to work over withoufinjury, the by-twelve feet sections lying between were formed in the same manner, sectioriaserving the mOUlds ones, the edgescjf then four block,S each. ' dellth' the incision maqe There is'", o'q4Mct in the testimony,as to in this pavement; the defendant Middleton, who superintended its construction, testifying that it is only an eighth of an inch deep. A "McDonald's markhig and dressing tool for cement pavement," patented in 1885,' is on exhibit in the case, arid he states that the marking or cutting

'or

or

wide

,

,

SCHILLINGER ,f).

MIDDLEtON.

739

tbJesbi the uUl:rkor cilt'mad'eby aquarter Ohill' inch 'eighth" plast¢r'6a13tBwere taken Of the ineisionel'in this pavement, and ,they' Bhow bey<6ridadoubt a cut of the of half an inch, and fully the same width 81 the surface. . This 'patent has the' circuit courts since the;uisclaimer was filed. The cases are cited in Paving Co. v.Schalicke,1l9 U. 8 .. 401,7 Bup:. Ct. Rep. 391. They are SchiUin'ge1l v.Gunther, 14 Blatchf. 152; Paving Co. v. MolitOr,7 Bawy. 190,8 Fed. Rep. ,821; Same v,. Free'born, 8 Sawy-. 443,17 Fed. Rep. 735; Schilli:rtger v. Brewing; 00., 21 ,Blafchf. 383, 17 Fed. Rep; 244j and. Kuhl.v. Mueller, 21 Fed. Rep.5l0. lfi the first ease it was held that the division between the blocks might be effected 'by-either a permanent or temporary interposition of something betweell thilIll; andthatto cut a section of.the materialli.fter it ,was laid down into blocks with a trowel was equivalent to making permanent interposition of tar-paper or other material. In the second case JUdge SAWYER followed tbis :ruling, contrary to his saying: "In 'the previous cases before me I insmcted thejtil'ythat, for the purpose of determining the question oOnfringement in those cases, there should be something, either tar-paper or its equivalent,permal'lently interposed between the joints." 7 Sawy.193. In the third case he held that where there was :nothing dona to separate 'a section of this pavement into blocks, but to run a marking tool over it,and make division lines of only one-sixteenth of an inch in depth, there'was no infringement: : In tlle fourth case it was held that the second claim of the reissue was infringed by'a':concrete pavement which had an open cut made by a trowel entirely through two courses of material, the line of cut in the upper course'being directly over the line of cut in the lower course; and that the interposition of the'trowel, though temporary, was an equivalent for the tar-paper, even though the joint was left open.a.fter the tr?wel was reIlloved.' In the last 'case (Southern Distl;ict Ohio) it was held that the use of any marker 'was an infringement which made a cut or. depression, having the affect to cause the pavement to break by upheaval or cracking, from any'cause, along the line of the cut or depressionj and that, as th6 blotlks fromtl1e pavements laid by the defendant showed clear distinct, and complete'lilles of division, there was infringement, whether these lines were produced by a trowelor marker. In Schillingerv. Cranford, decided in the supreme court of the District of Columbia on July 6, 1886, and printed in Senate Report No. 1459, 'from the committee on claims,it!Was held that the patent was confined to the cOllstruction ofa concrete pavement laid in detached blocks, formed. all the ground, of the same material from top to bottom, and separated by the interr>osition, in the process of for.mation, by a strip of tar-paper, or its equivalent, between each block, so as to make a watertight joint between blocks capable of being up or upboeaved by frost separately; and that neither concrete, sand, nor cement is the eqnivo

740

FEDERAL. REPORTER.

alent in tbis connection of tar-paper; nor is it an infringement of sucb patent to make pavement by laying.dowl,1 concrete in sections, and cutting it inti? blocks with1l.Il instrument called a clell,ver, and then ing these with a coating of plastic sand and cement, and cutting this surface through with a trowel, in a line with the cuts below, and then running a marker in the line of this surface cut, to give the pavement · the tesselated appearance of separate blocks. In Paving Co. v. Molitor, 113·U. S. 609, 5 Sup. Ct. Rep. 618, the supreme court, by Mr. Justice BRADI;.EY, said, in effect,that it was doubtful whether a concretepavenle.nt, mll,de, not in separate and detached blO'cks, but only marked on, .the surface,while in a plastic state, "with a trowel or marker extending to the depth of from. one-eighth of of an inch to an inch, th;usgiv:ing the same the appearance of being made in detached blocks, the crease on the surfaceblling sufficient to produce the results obtained by Schillinger's process," is an infringement of his patent. , In Paving Co. v. Schalicke, 1l9 U. S. 401, 7 Sup. Ct. Rep. 391,this patent was again before the court, when it was held that, in view of the disclaimediled by the patentee, the defendant's pavement was not an infringement of the same. Mr. Justice BLATCHFORD, who delivered the opinion of the court; after citing and stating the foregoing cases from the circuit courts of New York, California, and Ohio, said that the defendant, in the process of making his pavem,ent, marked off the surface into squares. But the question is, whether he so divided it into blocks that the line of cracking would follow the joints of the iOils,rather than the body.of the block, so that a block Cij,O be taken out and a new one put in its place without disturbing or injuring the adjoining one. "The specification makes it essential that the pavement shall be so laid in sections' that each section can be tak\:ln up and relaid without disturbing the adjoining sections.' . Again, it ,says that the joint between the blocks 'allows the several blocks to heave separately from the effects of frost, or to' be raised or removed separately, whenever occasion may arise, without injury to the:adjacent blocks.' This is essential; and in all cases where infringement ,has been held to have been lished there have been blocks substantiallyseparate"made so by the permanent or temporary interposition of a separating medium or a cutting instrument,so that one block could upheave or be removed without disturbing the adjoining blocks. The patentee, in the disclaimer, expressly disclaimed' the forming of blocks from plastic material, without interposing anything between their joints while in the propess of formation.'" , It appe'ars from the opinion ,that the defendapt laid his pavement in strips across the sidewalk,and then, divided these crosswise with a marker, to the depth of one-siXteenth of an inch. The court say this "marking" was only for ornamentation, and produced no free joints between the blocks; and disposed ofthe case in these words: "Without affirming or disaffirming the constructions given to the patent in the particular cases cited from the cIrcuit courts. we are of opinion that, un·

SCHltLINGl!:R V.MIHDLETON.

741

der any·construction which it· is possible to give to the·elaims. the defendant in tllis .case lias not infringe(J. .. . By the ac:.:tion of the court in this case the impression is produced on my mind that it did not agree with the construction given to this patent . in the cases referred to, or it would have said so. Under the circumstances, I feel at liberty to follow my own judgm.ent in the premises. I think there can be no infringement of this patEmh in the construction of a concrete pavement, unless it is made ofdetacHed. blocks formed on the ground, as laid down, with a water-tight joint between them, produced by the permanent interposition of tar-paper, or other suitable material, between the blocks; and that no marking or cutlaid down as a whole, oJ,' in large seotions, although the ting a same may thereby be separa.ted into blocks with equally as satisfactory results, is the equivalent of such tar-paper applied. Doubtless, this if upheaved, will have a tendency to crack along the line ()f the marking; and if it were cut through, as in the case of Schillinger v. Cranford. BUpra, there could be no doubt about it. But in either case the result would not be produced in the mode or by the means mentioned in the specifications, or their mechanical equivalent. Schillinger's claim is for" a concrete pavement laid in detached blocks or seytioris," by means of tar-paper, or other .suitable material, interposed between them, so as to produce a water-tight joint, and not one laid as a whole, or in large sections, and then marked off, or cut into blocks, with an open joint between them. The latter mode of making concrete pavement is altogether different from Shillinger's, and, for aught I can see, is as much entitled to a patent as his. They both appear to have the same end in view,-the prevention of the al'bitrary cracking and breaking of the pavement .from undue pressure from above or below. And Schillinger's invention may have suggested the method used by the defendants. But the march of improvement in this matter is not stayed by this simple invention; and it was, and still is, open to the public to wholly or partially reach the same result by the use of such other and different means as naturally suggest themselves to skillful and experienced workmen in the progress of the art. Doubtless, the water-tight joint which resulted from the interposition of the tar-paper gave this patent its principal value in the east, where, on account of the liability to severe frosts,· it .is an objeot to keep the water from getting under the pavement. But. on this <Joast that is a matter of less moment. Here the marking or.outting the pavement into comparatively small blocks. is done as much to prevent irregular cracking and breaking on accoulltof pressure from above on a sinking or shifting foundation, as from below. The patentee has expressly disclaimed "the forming of blocks from plastic material, without interposing anything between their joints while in the process of formation." Nothing was interposed "between the joints [blocks]" of ·this pavement while in process of formation. The joints between the. sections were made by forming one section against the other, after the fitst :was sufficiently set to bear working over, and the joints between the blocks into which the sections are divided are rather

made.: ,.Al'1d,i19o fS:rfrom theseblGckS being laid, as de· tached ones, they are not even detached yet, ,arid never will be, except violence or pressure, in which case crack or break on the 'line of the surface or irregularity in the body of the con· marks or cuts, but sJ.ll'faee r'; ," ',fpe defendants do not iQfrlnge,the patent, and the ,bill must ,be disPlissed., '. " , ,; , '

!"

EVF:RF:ST .

v.

BUFFAt.Q'LuIJIiICATING OIL ; .

;

Co., Limited.

Oourt, N; D.1few YQrk. July 1,1887.)

i

8.,depree has been, made, restraining the inf:ringement of a patent, 'a motion to dismiss the Gomplajnt on the ground that the supreme court, since thedeciee, had takenadvancM'vililwsupon the subject of patentable novelty, will be denied, where it app'ears,that all the decisions so referred to had been decided a¥d, we,re, published and accessible before the original arthe that the same. had all been by thesupreJP-e , court'w1thoUt advancmg 'any new doctrme, or formulatmg any new test of m· vention. : ' ' ,

2.-, SAME...,rATEN.TED PROCESS,ll'OB TfESTI!NG OILS-:-NoMI:NAL DAMAGES. Wher,e a patented pro()ess}ortesting oils has been infringed,but it does notappe8.l' that the defendant derived any profit from the use of the process. onlyuomlnal damages, can be recovered, and the fact that oil manufactured by another ,company, in' which the process was used, sold for a higher price than that Of other manufacturers. who did not use it, is not sufficient to warrant more than such nomina;} recovery: unless it was also shown that such enhanced value. or some part of it,was due to the use of the process. 8. TO. Where a master's report is confirmed by the court. awarding only nominal the infrin:gemimt of a patent, the costs of the reference, includ· ing,the fees, and. the costs of the exceptions and hearing thereon, b,e against the Complainant.

This cause argQed at the June circuit, 1884, and resulted in a decision for the. complainant. 20 Fed. Rep. 848. In November, 1884, the defendapt presented a petition for It rehearing, which, after arguJllent, and consideration, was denied. 22 Fed. Rep. 252. On the thirtieth, oiMarch, 1887, the master submittedhi,s report, in which he tIl cqruplaillant entitled to nominal damages only. The com!; plainantjiled exceptions to this report. The cause is now before the ,court upon and also upon a motion by the defendant ,tel dismiss; ltl,1e bill on the ground that the patent is void for want of ,Patentable novelty. The theory upon which the latter .motion is based is that, siU96 th interlocutory decree was entered,the supreme court, in 1 a, numlJerof causes, has tllJ),en' advanced ground upon the subject of patentable novelty, which disposes of the patent in question. GecrrgeB. Selden and T. G. Outerbridge, for complainant. James A. Allen, for defendant.